1215
Withdrawal or Dismissal of Appeal [R-11.2013]

1215.01
Withdrawal of Appeal [R-11.2013]

Where, after an appeal has been
filed and before decision by the Board, an applicant withdraws the appeal after the
period for reply to the final rejection has expired, the application is to be considered
abandoned as of the date on which the appeal was withdrawn unless there are allowed
claims in the case.

Where a letter abandoning the
application is filed in accordance with 37 CFR 1.138, the
effective date of abandonment is the date of recognition of the letter by an appropriate
official of the Office or a different date, if so specified in the letter itself. See
MPEP §
711.01.

If a brief has been filed within the
time permitted by 37 CFR 41.37 (or any extension
thereof) and an answer mailed and appellant withdraws the appeal prior to transfer of
jurisdiction to the Board under 37 CFR 41.35(a), the application is
returned to the examiner. If appellant withdraws the appeal after jurisdiction has been
transferred to the Board, dismissal of the appeal will be handled by the
Board.

Prior to a decision by the Board,
if an applicant wishes to withdraw an application from appeal and to reopen prosecution
of the application, applicant can file a request for continued examination (RCE) under
37
CFR 1.114, accompanied by a submission (i.e., a reply responsive
within the meaning of 37 CFR 1.111 to the last outstanding
Office action) and the RCE fee set forth under 37 CFR
1.17(e). Note that the RCE practice under 37 CFR
1.114 does not apply to utility or plant patent applications filed
before June 8, 1995, design applications, or reexamination proceedings. See
37
CFR 1.114(d) and MPEP § 706.07(h),
subsection X., for more details. An appeal brief or reply brief (or related papers) is
not a submission under 37 CFR 1.114, unless the transmittal
letter of the RCE contains a statement that incorporates by reference the arguments in a
previously filed appeal brief or reply brief. See MPEP § 706.07(h),
subsection II. The filing of an RCE will be treated as a withdrawal of the appeal by the
applicant, regardless of whether the RCE includes the appropriate fee or a submission.
Therefore, when an RCE is filed without the appropriate fee or a submission in an
application that has no allowed claims, the application will be considered abandoned. To
avoid abandonment, the RCE should be filed in compliance with 37 CFR
1.114. See MPEP § 706.07(h), subsections
I-II.

Once appellant has filed a notice of
appeal, appellant also may request that prosecution be reopened for the following
situations:

(A) In response to a new ground
of rejection made in an examiner’s answer, appellant may file a reply in
compliance with 37 CFR 1.111 that addresses
the new ground of rejection within two months from the mailing of the
examiner’s answer (see MPEP §
1207.03).

(B) In response to a substitute
examiner’s answer that is written in response to a remand by the Board for
further consideration of a rejection under 37 CFR
41.50(a), appellant may file a reply in compliance with
37 CFR 1.111 that addresses
the rejection in the substitute answer within two months from the mailing of
the substitute answer (see MPEP §
1207.05).

To avoid the rendering of decisions
by the Board in applications which have already been refiled as continuations,
applicants should promptly inform the Clerk of the Board in writing as soon as they have
positively decided to refile or to abandon an application containing an appeal awaiting
a decision. Applicants also should advise the Board when an RCE is filed in an
application containing an appeal awaiting decision. Failure to exercise appropriate
diligence in this matter may result in the Board refusing an otherwise proper request to
vacate its decision.

Upon the withdrawal of an appeal, an
application having no allowed claims is abandoned, and a notice of abandonment should be
mailed. Claims which are allowable except for their dependency from rejected claims will
be treated as if they were rejected. The following examples illustrate the appropriate
approach to be taken by the examiner in various situations:

(A) Claim 1 is allowed; claims
2 and 3 are rejected. The examiner should cancel claims 2 and 3 and issue the
application with claim 1 only.

(C) Claim 1 is rejected and
claim 2 is objected to as being allowable except for its dependency from claim
1. The examiner should hold the application abandoned.

(D) Claim 1 is rejected and
claim 2 is objected to as being allowable except for its dependency from claim
1; independent claim 3 is allowed. The examiner should cancel claims 1 and 2
and issue the application or ex parte reexamination
certificate with claim 3 only.

In an ex
parte reexamination proceeding, an ex
parte reexamination certificate should be issued under 37 CFR
1.570.

1215.02
Claims Standing Allowed [R-08.2012]

If an application contains allowed
claims, as well as claims on appeal, the withdrawal of the appeal does not operate as an
abandonment of the application, but is considered a withdrawal of the appeal as to those
claims and authority to the examiner to cancel the same. An amendment canceling the
appealed claims is equivalent to a withdrawal of the appeal.

1215.03
Partial Withdrawal [R-11.2013]

If an appellant wishes to remove
claims from consideration on appeal, the appellant must submit an amendment to cancel
the claims from the application. See 37 CFR 41.31(c) and
41.33. An appellant may, of course, choose not to present
arguments or rely upon particular evidence as to certain claim rejections; however, such
arguments and evidence are waived for purposes of the appeal and the Board may summarily
sustain any grounds of rejections not argued. See MPEP §§ 1205.02 and
1214.05.

If appellant fails to respond to a
new ground of rejection made in an examiner’s answer by either filing a reply brief or a
reply under 37 CFR 1.111 within 2 months from
the mailing of the examiner’s answer, the appeal will be sua
sponte dismissed by the Board as to the claims subject to the new ground of
rejection.

Similarly, if appellant fails to
respond to a substitute examiner’s answer that is written in response to a remand by the
Board for further consideration of a rejection under 37 CFR 41.50(a) by
either filing a reply brief or a reply under 37 CFR 1.111 within
2 months from the mailing of the substitute examiner's answer, the appeal will sua sponte dismissed by the Board as to the claims subject
to the rejection for which the Board has remanded the proceeding. Such substitute
examiner’s answer may also include a new ground of rejection.

1215.04
Dismissal of Appeal [R-11.2013]

If no brief is filed within the time
prescribed by 37 CFR 41.37, the appeal stands
dismissed by operation of the rule. Unless appellant specifically withdraws the appeal
as to rejected claims, the appeal should not be dismissed until the extended period (5
months of extension are available under 37 CFR 1.136(a)) to
file the brief has expired.

Applications having no allowed
claims will be abandoned. Claims which are allowable except for their dependency from
rejected claims will be treated as if they were rejected. The following examples
illustrate the appropriate approach to be taken by the examiner in various
situations:

(A) Claim 1 is allowed; claims
2 and 3 are rejected. The examiner should cancel claims 2 and 3 and issue the
application with claim 1 only.

(C) Claim 1 is rejected and
claim 2 is objected to as being allowable except for its dependency from claim
1. The examiner should hold the application abandoned.

(D) Claim 1 is rejected and
claim 2 is objected to as being allowable except for its dependency from claim
1; independent claim 3 is allowed. The examiner should cancel claims 1 and 2
and issue the application or ex parte reexamination
certificate with claim 3 only.

However, if formal matters remain to
be attended to, the examiner should take appropriate action on such matters. For example
(1) the examiner may handle the formal matters by examiner’s amendment (see
MPEP
§ 1302.04) or (2) the examiner may use form paragraph
12.209 to describe the
formal matters that applicant is required to correct and set a shortened period for
reply. Note that further prosecution on the application or reexamination proceeding is
closed except as to such formal matters.

¶ 12.209
Appeal Dismissed - Allowed Claims, Formal Matters
Remaining

In view of applicant’s failure to file
a brief within the time prescribed by 37 CFR 41.37(a)(1), the appeal stands
dismissed and the proceedings as to the rejected claims are considered terminated. See
37 CFR
1.197(b).

This application will be passed to
issue on allowed claim [1] provided the following formal matters are corrected.
Prosecution is otherwise closed.

[2]

Applicant is required to make the
necessary corrections within a shortened statutory period set to expire ONE MONTH or THIRTY
DAYS, whichever is longer, from the mailing date of this letter to avoid ABANDONMENT of the
application. Extensions of time may be granted under 37 CFR 1.136.

Examiner Note:

1. For use if the notice of appeal was filed on or after
January 23, 2012.

2. This form paragraph should only
be used if the formal matters cannot be handled by examiner’s amendment. See
MPEP §
1215.04.

3. In bracket 2, insert a
description of the formal matters to be corrected.

4. Claims which have been indicated
as containing allowable subject matter but are objected to as being dependent upon a
rejected claim are to be considered as if they were rejected. See MPEP §
1215.04.

An appeal will also be dismissed if
an applicant fails to timely and fully reply to a notice of noncompliance with
37
CFR 41.37(d). See MPEP § 1205.03 and 37 CFR
41.37(d). As in examples (B) - (C) above, if no allowed claims
remain in an application, the application is abandoned as of the date the reply to the
notice was due. The applicant may petition to revive the application as in other cases
of abandonment, and to reinstate the appeal. If the appeal is dismissed, but allowed
claims remain in the application, as in examples (A) and (D) above, the application is
not abandoned; to reinstate the claims cancelled by the examiner because of the
dismissal, the applicant must petition to reinstate the claims and the appeal, but
a showing equivalent to a petition to revive under 37 CFR 1.137 is
required. In either event, a proper reply to the notice of noncompliance must be filed
before the petition will be considered on its merits.